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The Perils of Provisionals

Time is short. Due to a product release, something must be done, and fast, to preserve the possibility of obtaining patent protection. Filing a provisional patent application in such a case is a tempting option. By statute, a provisional application must include a description of the invention as well as at least one drawing, but need not include claims. A provisional application expires on the first anniversary of its filing date, but within that period a regular application, which must include claims, can be filed claiming priority from the provisional application. Thus, the time-consuming process of drafting the claims can be deferred for up to a year. However, doing so may endanger any patent rights eventually obtained.

There is a fundamental problem with preparing and filing a provisional application without drafting claims. For a provisional application to provide an effective priority date vis-à-vis a subsequent regular application, the provisional application must describe the invention such that a skilled worker could practise the invention as claimed in the regular application. However, if the claims were not drafted when the specification of the provisional application was drafted, then the writer of the specification will not know what features the claims will ultimately recite. If the specification does not provide explicit support for the features recited in the claims, then the claims will not be entitled to the priority date provided by the provisional application. This, in turn, may be fatal to the patent if its validity depends on the priority date. This situation arose in New Railhead Manufacturing LLC v. Vermeer Manufacturing Co., 63 USPQ2d 1843 (CAFC 2002).

The Facts

The invention at issue was a horizontal drilling bit. Horizontal drilling is used when installing utilities around immovable objects, such as roadways, rivers or lakes. A provisional U.S. application for the drill bit was filed followed by a regular U.S. patent application that claimed priority from the provisional U.S. application. After the regular U.S. patent application issued to patent (U.S. Patent No. 5,899,283), New Railhead began an action against Vermeer for infringing the patent.

Vermeer challenged the validity of the patent on the basis (1) that the patented drill bit was the subject of a commercial offer for sale more than one year before the utility application was filed, and (2) that the U.S. patent did not enjoy the priority date of the provisional application. New Railhead did not dispute the first allegation regarding the commercial offer for sale. Accordingly, the validity of the patent depended entirely on the claim for priority from the provisional application.

The Issue

Claim 1 of the patent covered an asymmetric drill bit having a unitary bit body attached to a sonde housing at an angle to the sonde housing. At issue was whether this feature of claim 1 was adequately disclosed in the provisional application such that the patent could claim priority from the filing date of the provisional application.

This angled relationship was not clear from the drawings themselves, nor was it disclosed in the specification of the provisional application. New Railhead argued that if one of ordinary skill in the art were to actually construct the tool using the drawings provided in the provisional application, the claimed relationship would be present as the drawings were accurate scale drawings. However, the court found that the adequacy of the disclosure is measured from the application itself, and that the disclosure requirement is not satisfied if one of ordinary skill in the art must first make the patented invention before the claimed features can be ascertained. As a result, the patent could not claim priority from the filing date of the provisional application, and was invalidated by the commercial offer for sale that took place more than one year before the regular application was filed.

The Lesson

The drill bit described by New Railhead included a unitary drill bit that was angled relative to the sonde housing. This feature was not explicitly disclosed in the provisional application as the importance of this feature was not apparent until the claims were drafted. Drafting claims involves determining features that are present in as many embodiments as possible and not just in the embodiments disclosed. However, as demonstrated by the New Railhead case, the importance of these features may not be apparent unless the claims are drafted before the specification.

When drafting patent applications whether provisional or not, the claims should be drafted before the specification. Once the claims have been drafted, the specification should be drafted to support the claims by describing particular embodiments with reference to the features recited by the claims. Doing so may cost more up front, but is necessary if the provisional application is to provide an effective priority date.

Intellectual Property Managers Group

The Intellectual Property Managers Group is an association which will act as a forum for IP Managers, many of whom are not lawyers or patent agents, but deal with sophisticated IP and management decisions on a daily basis, to discuss matters of common interest.

For more information on the group visit www.bereskinparr.com/ipmg

There will be no meetings in July and August, the schedule will resume in September with the topic being “Inventor Recognition and Invention Disclosure”.

Speaking of IP....

We are participating in a number of conferences and seminars. Let us know if you will be attending any of them. We hope to see you this summer!

Sam Frost attended the International Federation of Intellectual Property Attorneys (FICPI) World Congress in Berlin, June 2–6, 2003.

Shawn Jacka and Ian McMillan attended the Summer Intellectual Property Law Conference of the IP Section of the American Bar Association (ABA) in San Diego, June 18-22.

Victor Krichker and Isis Caulder are attending the Canadian Corporate Counsel Association (CCCA) Annual Meeting in Montréal, August 17-19, 2003

Stephen Beney is speaking on "Patents Worldwide: The Strategy" in Montréal on August 7th at 8:30am - Understanding Patents: An Introductory Course, hosted by the Intellectual Property Institute of Canada and McGill University at McGill University

New Hire

We are pleased to announce that Ted Lane is joining us as an associate lawyer. Ted attended the University of Québec, where he obtained a B.Sc. degree in Computer Science. His law degree is from the University of Ottawa. He will be called to the Ontario Bar in July.

Edited by Isis E. Caulder. Please send feedback and suggestions to Isis at icaulder@bereskinparr.com.

The contents of this update are informational only, and do not constitute legal or other professional advice. To obtain such advice, please contact one of our group members.